On August 22, 2014, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Integrated Circuit Chips and Products Containing the Same (Inv. No. 337-TA-859).
By way of background, the investigation is based on a complaint filed by Realtek Semiconductor Corporation ("Realtek") alleging violation of Section 337 in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain integrated circuit chips and products containing the same that infringe one or more of claims 1-22 of U.S. Patent No. 6,787,928 and claims 1-22 of U.S. Patent No. 6,963,226 (the '226 patent). See our September 20, 2012 and October 22, 2012 posts for more details on Realtek's complaint and the Notice of Investigation, respectively.
The respondents in the investigation are LSI Corporation and Seagate Technology (collectively, "Respondents"). On January 30, 2013, former ALJ Robert K. Rogers, Jr. partially terminated the investigation with respect to the '226 patent. See our February 1, 2013 post for more details. On March 21, 2014, ALJ Lord issued the initial determination ("ID") finding no violation of Section 337 with respect to the '928 patent. Specifically, the ALJ determined that Realtek had not satisfied the domestic industry requirement with respect to the '928 patent. The ALJ also found that certain claims of the '928 patent were invalid. ALJ Lord further found that certain of Respondents' accused products literally infringe various claims of the '928 patent.See our May 7, 2014 post for more details regarding the ID.
As reported in our May 23, 2014 post, the Commission determined to review the ID with the exception of the following: (1) construction of the term "second pad layer," (2) findings on jurisdiction, and (3) level of one of ordinary skill in the art. We now provide the details of the Commission's opinion.
According to the opinion, the Commission adopted the ALJ's determination that the term "spaced apart" should be construed to have its plain and ordinary meaning, finding support in additional intrinsic evidence not specifically relied upon by the ALJ. The Commission adopted the ALJ's construction of "lower electric-conduction layer" with a modification, agreeing that it means a planar region of conductive material extending between the first pad layer and the substrate, the planar region being lower than the first pad layer and the compound layer structure, but holding that it is not limited to a single planar layer, as the ALJ had determined. The Commission also adopted the ALJ's construction of "wherein a noise from the substrate is kept away from the first pad layer by the lower electric-conduction layer" as having its plain and ordinary meaning, but added that one of ordinary skill in the art would understand the term to require "significant or substantial" noise reduction.
Anticipation and Obviousness
The Commission reviewed the ALJ's determination that all limitations of claims 1-3 and 6-10 of the '928 patent were anticipated by the MS410B chip, based on additional briefing clarifying whether modifying the construction of "lower electric-conduction layer" to include more than a single planar layer would have an effect. The parties agreed, and the Commission determined, that modifying the construction of this term would have no effect on the ALJ's invalidity determination. However, the Commission reversed the ALJ's finding that claim 10 was anticipated, based on the Commission's modified claim construction requiring substantial noise reduction, as Respondents provided no evidence that the MS410B reduces noise significantly or substantially.
The Commission reversed the ALJ's finding that claims 1-9 were anticipated by the Ker patent application, determining that there was not clear and convincing evidence that Ker inherently discloses a second bond pad coupled to the metal layers. Claim 10 was found not to be anticipated by the Ker application for the same reason as MS410B; namely, an absence of proof that the device in Ker reduces noise significantly or substantially.
The Commission took no position on whether claims 1-3 and 6-10 are obvious in view of the MS410B chip alone or whether claims 1-10 are obvious in view of the Ker application alone. However, the Commission did consider these references in combination in relation to claims 4-5, reversing the ALJ's finding of no obviousness based on the holding that these references could be combined.
According to the opinion, the ALJ found that some accused products do not meet the lower electric-conduction layer element under the doctrine of equivalents. The Commission reversed this finding, holding that this element is literally met under the modified construction of "lower electric-conduction layer" as including more than a single planar layer. The Commission affirmed the ALJ's finding of infringement of claim 10 based on the testimony of Realtek's expert, who explained the accused product results in significant noise reduction.
According to the opinion, Realtek relied on the domestic research and development investments of its U.S. affiliate to meet the economic prong of the domestic industry requirement. The Commission vacated the ALJ's finding on this issue, noting that the ID "improperly conflated our cases," though ultimately reached the same decision that Realtek did not meet the economic prong of the domestic industry requirement.
The Commission explained the articles requirement under subparagraph (a)(3)(C), and noted that that the Complainant must establish that there is a nexus between the claimed investment and the asserted patent. In this case, the Commission found that the evidence of record did not disclose any relationship between Realtek's U.S. activities and the '928 patent, and that research and development into features incorporated into articles that also practice the '928 patent was insufficient. As such, the Commission held that Realtek "did not demonstrate an investment in the United States of the '928 patent's exploitation, and thus the economic prong of the domestic industry requirement was not met (although the technical prong was).
Accordingly, the Commission determined that Realtek failed to prove a violation of Section 337.